The main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectification after the withdrawal of an earlier petition, and the prescribed non-use period must have lapsed for the petition to be maintainable.

JUDGMENT

(Prayer: Transfer Original Petition (Trademarks) filed under Sections 47 and 57 of the Trade Marks Act, 1999, prays to order the removal of the impugned Trade Mark No.1232740 in Class 30 from the register and award costs and exemplary costs of the proceedings.)

Background

By this petition, the petitioner seeks rectification by way of removal of the following device mark from the register of trade marks:

2. The first respondent applied for registration of the device mark extracted above on 05.09.2003 by asserting use since 01.06.1999. The application was filed in class 30 in relation to toor dal, dal varieties and other goods in class 30. The registration certificate was issued on 19.09.2005 with the limitation that the registration shall not give an exclusive right to use the device of the man and other descriptive matters appearing in the label. A rectification petition was filed by the petitioner earlier in 2006 in respect of the same trade mark and withdrawn in 2013. The present rectification petition was filed in January 2018 before the Intellectual Property Appellate Board (IPAB) and subsequently came to be transferred to this Court.

Counsel and their contentions

3. Oral arguments on behalf of the petitioner were addressed by Mr.Surya Senthil, learned counsel of M/s.Surana & Surana, and by Mr.Ramesh Ganapathy, learned counsel of M/s.Mission Legal for the first respondent. Mr.M.Karthikeyan, learned SPC, appeared on behalf of the second respondent.

4. Learned counsel for the petitioner submitted that the petitioner has used the trade mark 'GOLD WINNER' in relation to edible oil since 1999. Upon noticing the adoption and use of a device mark with a deceptively similar element, GOLD WINNER, he submitted that a rectification petition was filed by the petitioner before the Registrar of Trade Marks in the year 2006. He further submitted that the said rectification petition was withdrawn because the first respondent was not using the impugned trade mark at the time of withdrawal. Learned counsel submitted that the first respondent filed a suit (C.S.No.164 of 2017) before this Court thereafter alleging that the petitioner had infringed the first respondent's trade mark by adopting a deceptively similar trade mark and also sought to restrain the petitioner from passing off its products as those of the first respondent herein. By referring to the judgment and decree of this Court in C.S.No.164 of 2017, learned counsel contended that the Court concluded that the element 'GOLD WINNER' was not an essential feature of the trade mark of the first respondent. When the matter was carried in appeal by the first respondent herein, he submitted that the Division Bench affirmed the judgment of the Single Judge. In particular, learned counsel referred to paragraphs 46, 47 and 60 of the judgment of the learned Single Judge and paragraphs 10,12,14 and 15 of the judgment of the Division Bench.

5. Learned counsel next contended that Section 124 of the Trade Marks Act, 1999 (the Trade Marks Act) is not applicable because the petitioner is not challenging the validity of registration of the first respondent's trade mark. Consequently, although this Court did not frame an issue regarding the validity of the trade mark while deciding C.S.No.164 of 2017, he submitted that the present petition is maintainable.

6. As regards the withdrawal of the earlier rectification petition, learned counsel contended that the present petition is maintainable notwithstanding such withdrawal. According to learned counsel, a petition under Section 47 of the Trade Marks Act is maintainable after withdrawal of an earlier petition for rectification provided the petitioner satisfies the Court that there was non-use and that such non-use falls within the scope of Section 47.

7. By referring to the judgment of the Division Bench of this Court in Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Others, 1995 SCC OnLine Mad 189, learned counsel submitted that the Divis